Accord Healthcare v. Eli Lilly and Co., IPR2013-00356 (PTAB)
On October 1, 2013, the Patent Trial and Appeal Board issued
a decision denying the petition for inter partes review filed by Accord
Healthcare targeting Eli Lilly's U.S. Patent No. 7,772,209. The '209 patent is listed in the Orange Book for Alimta (pemetrexed disodium).
The Board denied Accord's
petition because it was filed more than one year after the filing date of the complaint in
the first of two ANDA lawsuits between the parties (Lilly v.
Accord, 1:12-cv-00086-TWP-DKL (S.D. Ind.)
("the '086 action"), filed January 20, 2012 and served January 23, 2012). Accord had argued that its petition was
timely because it was filed within one year of the filing of the complaint in
the second of the two lawsuits (Lilly v. Accord, 1:13-cv-00335-TWP-DKL (S.D. Ind.) ("the '335 action"),
filed February 28, 2013 and served March 7, 2013). The first lawsuit concerns Accord's 100 mg/vial and 500 mg/vial pemetrexed products and the second concerns its 1000 mg/vial product.
Specifically, the Board found that the filing of the second
complaint did not reset the time for filing a petition for inter partes
review:
We reject Accord's implicit argument
that the one-year period set forth in § 315(b) should not be measured from the
date of service of the complaint in the '086 action. The plain language of the
statute does not indicate or suggest that the filing of a later lawsuit renders
the service of a complaint in an earlier lawsuit a nullity.
Accord's petition can be found here, and Lilly's
patent owner response can be found here.
Of the eleven petitions for inter partes review so far filed
by generic drug companies, six (including Accord's) were filed against patents
already in litigation, and five were filed by just two petitioners. Three
trials have been instituted, while no institution decision has been issued in
response to the remaining seven petitions. There have as yet been no final
decisions in any inter partes review trials.
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